Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Entered: April 29, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`YAHOO! INC.,
`Petitioner,
`
`v.
`
`CREATEADS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00200
`Patent 5,535,320
`____________
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`On November 27, 2013, Google Inc. and Yahoo! Inc. filed a Petition
`(Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes
`review of claims 1–20 of U.S. Patent No. 5,535,320 (Ex. 1001, “the ’320
`
`
`571-272-7822
`
`Paper 42
`Entered: April 29, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`YAHOO! INC.,
`Petitioner,
`
`v.
`
`CREATEADS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00200
`Patent 5,535,320
`____________
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`On November 27, 2013, Google Inc. and Yahoo! Inc. filed a Petition
`(Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes
`review of claims 1–20 of U.S. Patent No. 5,535,320 (Ex. 1001, “the ’320
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`patent”). A Corrected Petition (Paper 7, “Pet.”) was filed on December 18,
`2013. CreateAds LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) to the Corrected Petition on March 17, 2014.
`Pursuant to 35 U.S.C. § 314(a), the Board instituted trial on May 9, 2014, as
`to claims 1–20. Paper 10 (“Institution Decision” or “Dec.”).
`During the trial, Patent Owner timely filed a Patent Owner Response
`(Paper 20, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
`Owner Response (Paper 25, “Reply”). An oral hearing was held on
`February 2, 2015 (Transcript, Paper 41).
`On November 7, 2014, the proceeding was terminated with respect to
`Google Inc. Paper 27. On February 26, 2015, the proceeding was
`terminated with respect to Yahoo! Inc. Paper 40. Although the proceeding
`thus was terminated with respect to all petitioners, the proceeding itself was
`not terminated, and we indicated our intention to proceed to this Final
`Written Decision. Id. at 2.
`We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
`Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
`claims. Based on the record before us, Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–20 are unpatentable.
`
`
`B. Related Proceedings
`The ’320 patent is involved as an asserted patent in the following
`district-court lawsuits between Patent Owner and the original petitioners:
`CreateAds LLC v. Google Inc., Case No. 12-1606-GMS (D. Del.) and
`
`2
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`CreateAds LLC v. Yahoo! Inc., Case No. 12-1613-GMS (D. Del.). Petitioner
`represents that the ’320 patent is also involved in thirty-three other
`copending lawsuits in the United States District Court for the District of
`Delaware, identified in Exhibit 1004. Pet. 1.
`
`
`C. Grounds of Unpatentability
`Petitioner relies on the following prior-art references.
`Sieber
`US 5,649,216
`July 15, 1997
`(Ex. 1005)
`Sieber PCT WO 92/21097
`Nov. 26, 1992
`(Ex. 1006)
`Powell
`US 4,873,643
`Oct. 10, 1989
`(Ex. 1010)
`
`Amari
`
`Thomas R. Amari, Automating the Design of
`Packaging Families Using PackIT, The Packager’s
`Inferencing Tool, 1–131 (1987) (Ex. 1009)
`
`
`Feiner
`
`Steven Feiner, A Grid-Based Approach to Automating
`Display Layout, Proc. Graph. Int. 1988, 192–97
`(1988) (Ex. 1011)
`
`
`The grounds on which we instituted review are summarized by the
`following chart.
`References
`
`Sieber
`Sieber PCT
`Amari
`Sieber and Amari
`Sieber PCT and Amari
`Sieber and Feiner
`Sieber PCT and Feiner
`
`
`Claim(s) Challenged
`1, 2, 4–8, 10–15, and 17–20
`1, 2, 4–8, 10–15, and 17–20
`1, 2, 4–8, 10–15, and 17–20
`9
`9
`3, 5, 16, and 18
`3, 5, 16, and 18
`
`Basis
`§ 102(e)
`§ 102(b)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`3
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`D. The ’320 Patent
`The ’320 patent, titled “Method of Generating a Visual Design,”
`issued on July 9, 1996, based on Application 08/268,613, filed July 1, 1994,
`and claims priority under 35 U.S.C. § 119(a) to GB 9313761, filed July 2,
`1993. The ’320 patent “relates to a method of generating a visual design for
`[an] application, for example, in the field of advertising, packaging or
`creating corporate images.” Ex. 1001, col. 1, ll. 8–10. The ’320 patent
`describes three databases that contain information used in generating the
`visual design: (1) a first database that stores “visual design elements,”
`described as “typically includ[ing] logos, logotypes, graphics or other
`images, icons and custom wording in predetermined fonts,” id. at col. 2,
`ll. 51–53; (2) a second database that stores required “text elements,”
`described as “typically includ[ing] predetermined words, phrases, and blocks
`of text which may be descriptive or promotional in nature,” id. at col. 2,
`ll. 55–57; and (3) a third database that “stores data relating to predetermined
`design parameters which vary according to the visual design application
`which is selected,” id. at col. 2, ll. 59–61. Examples of “visual design
`applications” provided in the patent “include stationery, livery, signage,
`environmental items or structures, interior and exterior design, packaging,
`promotions and advertising.” Id. at col. 2, ll. 61–64.
`Software uses these databases to generate a visual design, with the
`’320 patent illustrating four basic kinds of calculation through a series of
`flow diagrams: a reading-distance calculation, a scaling calculation, a
`positioning calculation, and an artwork-sizing calculation. Id. at col. 3,
`
`4
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`ll. 55–60. A user may input values for certain parameters, with the software
`applying the calculations to determine values for other parameters used in
`generating the visual design. For example, if a user inputs design
`dimensions, the software may calculate the appropriate reading distance; if a
`user inputs a desired reading distance, the software may calculate overall
`dimensions of the design. Id. at col. 3, ll. 61–67. The various calculations
`result in determining a size and position for visual design elements and/or
`text elements in the visual design. Id. at col. 4, ll. 1–25.
`Claim 1 is illustrative of the challenged claims:
`1. A method of generating a representation of a visual design
`comprising:
`storing data defining a plurality of visual design
`elements;
`storing data defining a plurality of predetermined design
`parameters;
`selecting one of a plurality of predetermined visual
`design applications, wherein each one of said plurality of
`predetermined visual design applications is associated with one
`or more of said plurality of predetermined design parameters;
`selecting at least one visual design element for inclusion in the
`visual design;
`generating a visual design utilizing the selected visual
`design element, the size and position of the element in the
`visual design being determined by the predetermined design
`parameters associated with the selected design application; and
`generating a representation of the visual design.
`
`
`Id. at 45–62.
`
`5
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`II. ANALYSIS
`A. Claim Construction
`The ’320 patent expired on July 1, 2014. See Paper 19, 2. The Board
`interprets claims of an expired patent under principles similar to those used
`during a district court’s review. See In re Rambus, Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012). We are guided by the principle that the words of a claim
`“are generally given their ordinary and customary meaning,” as understood
`by a person of ordinary skill in the art in question at the time of the
`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). “In determining the meaning of the disputed claim language, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is
`a “heavy presumption,” however, that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002) (internal citation omitted).
`
`
`1. Claim Terms Previously Construed
`In the Institution Decision, entered before expiration of the ’320
`patent, we construed claim terms as reproduced in the table below, using the
`broadest reasonable construction in light of the specification of the patent in
`which they appear. Dec. 6–11.
`
`
`6
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`Claim Term
`“visual design elements”
`
`“text elements”
`
`“predetermined design
`parameters”
`“storing data defining . . .”
`“predetermined visual design
`applications”
`“livery”
`
`Construction in the Institution Decision
`logos, logotypes, graphics or other images,
`and wording in predetermined fonts each
`provide examples of “visual design
`elements”
`words, phrases, and blocks of text each
`provide examples of “text elements”
`“predetermined parameters that affect the
`appearance of the visual design”
`“recording [specified] information”
`“predetermined implementations for a visual
`design”
`“an emblem, device, and/or distinctive color
`on a vehicle, product, uniform, or other
`clothing, etc., indicating its owner or
`manufacturer”
`
`
`After expiration of the ’320 patent, we reconsidered our initial claim
`construction, concluding that construction under the principles applicable to
`expired patents “does not change our construction.” Paper 19, 3. We have
`reconsidered our construction again in light of further development of the
`parties’ positions during the trial, and conclude that there is no compelling
`reason to modify our constructions of “visual design elements,” “text
`elements,” “predetermined design parameters,” “predetermined visual
`design applications,” or “livery.” See, e.g., Facebook, Inc. v. Pragmatus AV,
`LLC, 582 Fed.Appx. 864, 869 (Fed. Cir. 2014) (nonprecedential) (“The
`broadest reasonable interpretation of a claim term may be the same as or
`broader than the construction of a term under the Phillips standard”)
`(emphasis added).
`
`7
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`“storing data defining . . .”
`Patent Owner contends that, under the Phillips standard, a person of
`ordinary skill in the art would construe each of “storing data defining a
`plurality of visual design elements,” “storing data defining a plurality of
`predetermined design parameters,” and “storing data defining a plurality of
`text elements” as requiring organization of the recited data in a database.
`PO Resp. 8–10, 12–14, 16–17. Patent Owner directs our attention to
`Fotomedia Techs, LLC v. AOL, LLC, Civil Action Nos. 2:07-cv-255 and
`2:07-cv-256, 2009 WL 2175845, at *16 (E.D. Tex. July 21, 2009), as
`standing for the proposition that the claim term “storing” should be
`construed to require database storage “when the specification expressly, and
`solely, describes storage in a database.” See id. at 9–10. Patent Owner
`observes that the specification of the ’320 patent “repeatedly and
`consistently states that the visual design elements are stored in a database.”
`Id. at 9; see id. at 13 (similar observation for storage of predetermined
`design parameters), 16 (similar observation for storage of text elements).
`Petitioner does not address the reasoning of the District Court Magistrate
`Judge in Fotomedia in its Reply.
`Patent Owner also supports its proposed construction with testimony
`by Craig E. Wills, Ph.D.,1 who attests that
`a person of ordinary skill in the art in 1993 would have
`understood . . . that for visual design elements to be selected
`from a storage medium for inclusion in a visual design
`
`1 As discussed infra, we deny Petitioner’s motion to exclude the testimony
`of Dr. Wills.
`
`8
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`application, one would have understood that the claimed visual
`design elements must be organized and stored in a database to
`be made available for selection.
`
`
`Ex. 2000 ¶ 19; see id. ¶ 22 (similar opinion for storage of predetermined
`design parameters), ¶ 25 (similar opinion for storage of text elements).
`Notably, the claims recite “storing” the various forms of data in combination
`with selection of at least one of the respective data. Although Petitioner
`challenges Patent Owner’s proposed construction, it appears not to have
`cross-examined Dr. Wills to explore further the basis for his opinion. See
`Reply 2–4. Petitioner also does not direct us to any disclosure in the
`specification of any other way of storing the recited forms of data.
`We are persuaded that, under the construction afforded claims of an
`expired patent, the reasoning of Fotomedia is applicable and the claimed
`combination of selection of at least one of the respective data with “storing”
`the different forms of data supports a construction of “storing data defining
`. . .” as requiring storage in a database. But to the extent that Patent Owner’s
`proposed constructions demand different databases for the different forms of
`data, we disagree. Although the specification of the ’320 patent makes
`reference to “first,” “second,” and “third” databases (see, e.g., Ex. 1001, col.
`2, ll. 53–61), Patent Owner has not identified sufficient rationale for
`incorporating such a distinction into the claims. “Although the claims are
`interpreted in light of the specification, limitations from the specification are
`not read into the claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993).
`
`9
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`We also disagree with Patent Owner’s contentions that (1) the “data
`defining” a “visual design element” must include its height and width; and
`(2) the “data defining” a “plurality of predetermined design parameters”
`must include parameters identifying size and position of the elements in a
`visual design. Both of these contentions improperly attempt to import
`limitations from the specification by imposing constraints on data storage
`that are neither recited explicitly in the claims nor demanded by the
`relationship with other elements recited in the claims.
`Accordingly, we construe “storing data defining . . .” as “recording, in
`a database, information defining . . . .”
`
`
`2. “entering data corresponding to a
`permitted range of variables in the selected design application”
`
`Each of claims 4 and 17 recites “entering data corresponding to a
`permitted range of variables in the selected design application.” Patent
`Owner proposes that this limitation be construed as “entering a value within
`a predetermined range of values associated with the selected design
`application.” PO Resp. 17–18. Patent Owner reasons that one of ordinary
`skill in the art would understand that a “permitted” range must be
`determined in advance of entering a value within the range, and supports its
`reasoning with testimony by Dr. Wills. Id. at 18 (citing Ex. 2000 ¶ 26).
`Patent Owner also observes that the abstract of the ’320 patent explains that
`“[t]hese parameters, together with user-entered variables within a
`predetermined range adjust the relative size of each element and the
`
`10
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`juxtaposition in the elements in the final design.” Id. (citing Ex. 1001,
`Abst.).
`Petitioner disagrees with Patent Owner’s proposed construction,
`contending that “range of variables” would have been understood by one of
`ordinary skill in the art to mean a “list of variables,” not “the values of the
`variables,” supporting its proposal with testimony by Dr. Arthur M. Keller.
`Reply 4–5 (citing Ex. 1023 ¶¶ 23–25). Petitioner contends that its proposed
`construction is supported by the specification of the ’320 patent by
`describing several variables. Id. at 5.
`We find that Petitioner’s proposed construction requires a less natural
`reading of the limitation, particularly in light of the language identified by
`Patent Owner in the patent’s abstract. In addition, Dr. Keller acknowledged
`at his deposition that “there are two alternative interpretations of the phrase
`‘corresponding to a permitted range of variables,’” including the one
`advanced by Patent Owner. Ex. 1022, 68:23–69:8.
`We construe the limitation as proposed by Patent Owner, i.e., as
`“entering a value within a predetermined range of values associated with the
`selected design application.”
`
`
`B. Petitioner’s Motion to Exclude
`Petitioner moves to exclude the declaration testimony of Patent
`Owner’s witness, Dr. Wills (Ex. 2000). Paper 30. Petitioner contends that
`Patent Owner has not qualified Dr. Wills as an expert and that his
`declaration is conclusory in nature because he fails to state what materials he
`
`11
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`considered and what methodology he used in creating his declaration. Id. at
`1. Petitioner timely objected to Dr. Wills’s declaration. Ex. 1024.
`“A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an opinion or
`otherwise if” certain conditions are met. Fed. R. Evid. 702. Although
`Patent Owner did not provide a copy of Dr. Wills’s curriculum vitae (Ex.
`2003) with his declaration, the summary description of Dr. Wills’s education
`and experience in the declaration itself qualifies him as an expert on the
`issues addressed in his declaration. Dr. Wills declares under penalty of
`perjury that he holds baccalaureate and advanced degrees in computer
`science and has taught courses on “User Interface Design, in which visual
`design was one of the topics of the course.” Ex. 2000 ¶¶ 1–4.
`In considering whether Dr. Wills’s opinions are deficient for failing to
`articulate sufficiently what materials he considered and what methodology
`he sued, we observe that his declaration is limited in scope. It provides
`some background description of the technology at issue (id. ¶¶ 6–10), a brief
`overview of the ’320 patent (id. ¶¶ 11–12), an evaluation of the level of
`ordinary skill in the art (id. ¶¶ 13–16), and an expression of his opinion of
`how a person of ordinary skill in the art would understand certain terms
`appearing in the claims (id. ¶¶ 17–30). This information is helpful in
`developing appropriate claim constructions and requires no unusual or
`elaborate methodology. Notably, Dr. Wills does not testify to any opinion
`whether the claim elements are taught or suggested by any of the prior art
`
`12
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`applied in any of the grounds upon which we instituted this inter partes
`review.
`For these reasons, we decline to exclude the testimony of Dr. Wills.
`
`
`C. Anticipation of Claims 1, 2, 4–8, 10–15, and 17–20
`by Sieber and Sieber PCT
`
`Sieber and Sieber PCT both developed from the same original
`application filed in the United States and share much of the same
`specification. They “relate[] to electronic publishing, and more particularly,
`to a system for automatically generating the page layout of a printed
`document from use-defined text and graphic elements.” Ex. 1005, col. 1, ll.
`16–19; Ex. 1006, 2.2 Petitioner contends that claims 1, 2, 4–8, 10–15, and
`17–20 are anticipated by Sieber and are anticipated by Sieber PCT. Pet. 11–
`28.
`
`Figure 2 of Sieber and Sieber PCT is reproduced below.
`
`
`
`
`2 Exhibit 1006 has two sets of pagination, the original pagination of the
`reference and pagination added by Petitioner. We cite to the original
`pagination of the reference.
`
`13
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`Figure 2 illustrates an example of a document to which Sieber and Sieber
`PCT may be applied, in the form of a business card. Ex. 1005, col. 5, ll. 3–
`6; Ex. 1006, 8. A database of page specifications is stored, with each page
`specification generically describing the page layout of the document. Ex.
`1005, col. 4, ll. 61–65; Ex. 1006, 8. The page layout corresponding to the
`example of Figure 2 includes (1) graphic element G1, which is “represented
`by a data structure . . . having the user-definable attributes of location, size,
`and actual graphic data,” Ex. 1005, col. 5, ll. 21–23, Ex. 1006, 9; and (2) text
`elements T1–T6, which are represented by data structures that “have the
`user-definable attributes of font style, character string, size, and location,”
`Ex. 1005, col. 5, ll. 17–20; Ex. 1006, 9. Other data structures define
`unchangeable aspects of the page, and various constraints comprised by the
`page specifications “describe various aspects of page 28 as well as the size
`and placement of the text and graphic elements of document 30 and their
`relationship to each other and to page 28.” Ex. 1005, col. 5, ll. 23–29; Ex.
`1006, 9.
`The principal difference between Sieber and Sieber PCT is the
`disclosure of a second embodiment in Sieber, shown in Figures 5–8 and
`described at column 8, line 41 – column 11, line 38, that does not appear in
`Sieber PCT. Figure 6 of Sieber is reproduced below.
`
`14
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`
`
`Figure 6 illustrates a second example of a document to which Sieber may be
`applied (but which does not appear in Sieber PCT), in the form of a greeting
`card. Ex. 1005, col. 9, ll. 3–5. Sieber describes an artwork specification:
`[A]rtwork specification 118 comprises a plurality of data
`structures representing the graphic elements of the artwork, as
`well as a plurality of constraints that dictate the relationships of
`the graphic elements to one another as well as to any text
`elements or other elements that might be incorporated into
`greeting card 120 . . . . The significant feature is that each
`artwork specification 118 describes how the other elements,
`such as text or graphic elements should interact with the
`placement of the artwork on the greeting card.
`
`Ex. 1005, col. 9, ll. 10–46.
`Graphic element G1 of Figure 2 and artwork A1 and A2 of Figure 6
`are “visual design elements” as we have construed the term. Text elements
`T1–T6 of Figure 2 and the text that may be placed within area T1 of
`
`15
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`Figure 6 are “text elements” as we have construed the term. The constraints
`on size and placement of text and graphic elements described separately for
`the first embodiment (see Ex. 1005, col. 5, ll. 23–29 and Ex. 1006, 9) and for
`the second embodiment (see Ex. 1005, col. 9, ll. 10–48) disclose
`“predetermined designed parameters” as we have construed the term. In
`addition, each of the business-card and greeting-card applications are
`stationery implementations for the visual design that correspond to
`“predetermined visual design applications” as we have construed the term.
`We have reviewed the evidence presented by Petitioner, including the
`claim charts in the Petition (Pet. 13–28) and the Declarations of Dr. Keller
`(Exs. 1012, 1023). Notwithstanding Patent Owner’s arguments, we are
`persuaded that Petitioner has proved by a preponderance of the evidence that
`Sieber and Sieber PCT each anticipate claims 1, 2, 4–8, 10–15, and 17–20.
`We address specific arguments below.
`
`
`1. “selecting one of a plurality of
`predetermined visual design applications”
`
`Patent Owner contends that neither Sieber nor Sieber PCT discloses
`“selecting one of a plurality of predetermined visual design applications”
`(emphasis added), as recited in independent claims 1 and 14, because Sieber
`and Sieber PCT “are limited to a single implementation – stationery.” PO
`Resp. 24–27. This contention introduces a further level of abstraction absent
`from our construction of “predetermined visual design applications” as
`“predetermined implementations for a visual design.” Nothing in our
`
`16
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`construction precludes multiple stationery implementations from
`corresponding to “a plurality of predetermined visual design applications.”
`Indeed, Petitioner identifies passages in the specification of the ’320 patent
`inconsistent with Patent Owner’s position:
`[I]n describing the purported problem to be solved, the
`specification notes that confusion or brand dilution may arise
`when “a particular trade mark may be applied to a number of
`different products, with a number of different forms of
`packaging, as well as being applied in advertising, signage, and
`on letterheads.” These passages teach that visual design
`“applications” may exist within a single subject matter category
`(e.g., “packaging”), and may also span multiple subject matter
`categories (e.g., “packaging,” “advertising,” “signage,” and
`“letterheads.”) In addition, the fact that a given “application”
`may fall within two or more subject matter categories—e.g., a
`product package may be “packaging,” “promotions,” and
`“advertising”—further confirms that the ’320 patent does not
`contemplate a hard division between subject matter categories.
`
`Reply 7 (citing Ex. 1001, col. 1, ll. 15–18 (emphases by Petitioner)) (other
`citations omitted). Petitioner also supports its opposition to Patent Owner’s
`introduction of a higher level of abstraction in discussing “subject matter
`categories” with declaration testimony by Dr. Keller. Ex. 1023 ¶ 30.
`Sieber and Sieber PCT disclose a “database [that] may contain
`numerous page specifications.” Ex. 1005, col. 6, l. 19; Ex. 1006, 11. Each
`such page specification “comprises a plurality of data structures representing
`the text and graphic elements of [a] document 30.” Ex. 1005, col. 5, ll. 12–
`14; Ex. 1006, 9. We find that the disclosure of such multiple page
`specifications discloses “a plurality of predetermined visual design
`
`17
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`applications.” In addition, we find that Sieber and Sieber PCT’s disclosure
`of “user interface subroutines which allow the user to select one of the page
`specifications in [the] database 25” (Ex. 1005, col. 6, ll. 35–37; Ex. 1006,
`12) discloses “selecting one of a plurality of predetermined visual design
`applications.”
`
`2. “entering data corresponding to a permitted range of variables
`in the selected design application”
`
`Each of dependent claims 4 and 17 recites “entering data
`corresponding to a permitted range of variables in the selected design
`application,” which we construe as “entering a value within a predetermined
`range of values associated with the selected design application.” Patent
`Owner contends that Petitioner’s identification of entering page dimensions,
`aspect ratios, text, font styles, locations and sizes of elements is insufficient
`to demonstrate that the limitation is disclosed by Sieber or Sieber PCT
`because “[s]imply entering information . . . does not indicate that there is a
`‘permitted range.’” PO Resp. 29.
`Patent Owner identifies aspect ratio as a choice “which may be
`limited.” Id. Sieber and Sieber PCT disclose that, in some instances, “the
`user will be prompted to enter the desired dimensions of the page 28, as well
`as the desired aspect ratio, i.e., portrait or landscape format, if applicable.”
`Ex. 1005, col. 7, ll. 56–58; Ex. 1006, 15. Patent Owner’s argument that
`“there is no indication from these vague statements as to whether Sieber
`provides a predetermined range of values or whether it is limited to a single
`
`18
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`value” does not impugn that the states of “portrait” and “landscape” define a
`“predetermined range of values.” See PO Resp. 30. Rather, Patent Owner
`suggests that Sieber and Sieber PCT’s assertion that prompting the user to
`enter a desired aspect ratio “if applicable” does not rule out possibilities
`when no such choice is afforded to the user. See id. This is unpersuasive.
`Sieber and Sieber PCT clearly contemplate circumstances in which the user
`enters a value (“portrait” or “landscape”) within a predetermined range of
`values (“portrait” and “landscape”) associated with the selected design
`application.
`We also note that Dr. Keller opines that Sieber and Sieber PCT’s
`disclosure of design constraints effectively imposes limits on the variables
`for which a user is prompted to enter values. See Ex. 1023 ¶ 41. Patent
`Owner does not identify adequately controverting evidence. Petitioner’s
`argument that the Petition’s identification of “page dimensions, object
`locations, previously stored graphics, and font options as other variables in
`Sieber and Sieber PCT, for which the user can enter data corresponding to
`each variable” (Reply 11) thus is supported by sufficient evidence.
`
`
`3. “text elements include predetermined words,
`phrases, and blocks of text”
`
`Claim 6 recites that “the text elements include predetermined words,
`phrases and blocks of text.” Patent Owner contends that this limitation is
`not directed to nonfunctional descriptive material and that it is not disclosed
`by Sieber or Sieber PCT. PO Resp. 31–34. We need not decide the former
`
`19
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`contention because we are persuaded by Petitioner that the limitation, in any
`event, is disclosed by Sieber and Sieber PCT.
`Petitioner identifies Sieber and Sieber PCT’s disclosure of storing
`“user-defined character strings,” and Sieber PCT’s disclosure of a database
`that “contains a plurality of pre-written message texts that are not associated
`with any particular type of artwork,” examples of which include generic
`holiday greetings and famous quotations. Pet. 20 (citing Ex. 1005, col. 10,
`ll. 15–29); see Ex. 1006, 5. Patent Owner’s contention that “‘user-defined
`character strings’ are not ‘predetermined’” because they are determined at
`the instant the user creates them is not persuasive. See PO Resp. 33.
`Although they may be “determined” in the first instance at that time, Sieber
`and Sieber PCT teach storing them so that their subsequent use thereafter is
`“predetermined.” See Ex. 1005, col. 3, ll. 7–8; Ex. 1006, 5. And Patent
`Owner’s argument that “the Petition does not specify which, if any, of the
`joke, holiday greeting or famous quotation anticipate the ‘predetermined
`words, phrases and blocks of text’ limitation” is also unpersuasive because
`each of those message texts includes predetermined words, phrases, and
`blocks of text. See PO Resp. 33–34.
`
`
`4. “visual design elements include . . .
`wording in predetermined fonts”
`
`Claims 7 and 8 recite that “the visual design elements include logos,
`logotypes, graphics or other images, and wording in predetermined fonts.”
`The Petition identifies a graphic element “such as a corporate logo or other
`
`20
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`symbols associated with the card holder’s business or trade” as a visual
`design element that includes wording in predetermined fonts. Pet. 20–21
`(citing Ex. 1005, col. 5, ll. 45–48; Ex. 1006, 10). We disagree with Patent
`Owner’s assertion that “[t]he Petition does not state or suggest that the
`corporate logo or symbol for the graphic element G1 is ‘wording in
`predetermined fonts.’” PO Resp. 35. The Petition includes a chart to
`illustrate that “[e]ach and every element of claims 1-20 is disclosed in each
`of Sieber and Sieber PCT” (Pet. 13), with the text of claim 7 reproduced
`beside the disclosure of Sieber and Sieber PCT describing a corporate logo
`or other symbol as an example of graphic element G1. We determine that
`the cited portions of the references adequately disclose what Patent Owner
`contends is absent from the Petition.
`
`5. “each of the plurality of predetermined visual design applications
`has its own predetermined design parameters, which are related to the
`predetermined design parameters of one or more of the other visual design
`applications”
`
`Claims 10 and 19 each recite that “the plurality of predetermined
`visual design applications has its own predetermined design parameters,
`which are related to the predetermined design parameters of one or more of
`the other visual design applications.” In considering this limitation, we note
`that “related” is a broad term that may be satisfied in a variety of different
`ways. Although Patent Owner contends that it is “unclear” how the portions
`of Sieber and Sieber PCT cited by Petitioner meet the limitation (PO Resp.
`
`21
`
`
`
`IPR2014-00200
`Patent 5,535,320
`
`36–37), Petitioner’s observation that page specifications contain common
`elements is sufficient to show relatedness. See Pet. 22, 27–28; Reply 14.
`
`
`6. Summary
`Based on our consideration of the evidence presented by Petitioner
`and the arguments detailed above, we are persuaded that Petitioner has
`proved by a preponderance of the evidence that claims 1, 2, 4–8, 10–15, and
`17–20 are anticipated by
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
